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Software Partnership Meeting
Thursday, December 5, 2013
1:00PM – 4:30PM
Madison North Auditorium Alexandria, VA
On Prior Art Resources
Software Partnership Meeting
James Dwyer
Assistant Deputy Commissioner for Patent [email protected]
On Prior Art Resources
Software Partnership Meeting
Margaret A. (Peggy) Focarino
Commissioner for Patents
On Prior Art Resources
Prior Art Resources
Seema S. Rao
Technology Center Group Director, TC [email protected](571) 272-5253
Agenda
Time Topic
10 minutes Introduction & Background
70 minutes
USPTO Presentations• Brian Sircus• Scott Beliveau• Pamela Reynolds• Boris Pesin• Q & A
15 minutes Break
70 minutes
Stakeholder Presentations• Brad Pederson (Patterson Thuente IP)• John Toebes (Cisco Systems)• Dominic DeMarco (DeMarco IP, LLC and PIUG)• Michael Messinger (Sterne, Kessler, Goldstein, and Fox)• Q & A
30 minutes Open Discussion
5 minutes Closing Remarks
Federal Register Notice on Software Partnership78 Fed. Reg. 292 (Jan. 2013)
• Topic: topics for the future software partnership meetings
• Comment: prior-art-based searching during examination of software and computer implemented inventions
Federal Register Notice on Software Partnership78 Fed. Reg. 292 (Jan. 2013)
• Enable examiners to search academic papers, books, brochures, and other publications provided by outside companies
• Private sector provision of/access to prior art resources
• Maximize benefit of 3rd-party submissions
Agency Approach
• Educate stakeholders on USPTO search resources and techniques
• Listen to external stakeholders’ views
• Work with stakeholders to improve searching
Public Resources
• http://www.uspto.gov/products/library/ptdl/
• Seven Step Strategy is a basic search tutorial which can be divided into three sections
• Formulating a search strategy including
Classification search
Keywords
• Tools and databases
• Evaluation process
USPTO Presentations
• Search Strategies and Tools
• Collaboration Resources
• Scientific and Technical Information Center (STIC)
• Search Demonstration
Search Strategies and Tools
Brian Sircus
Quality Assurance Specialist (QAS), TC 2800
Patent Training Academy (PTA)
Entry Level Program• New examiners without IP experience
• Initial 4-month training in PTA
– In-depth training on U.S. statutes,
rules, procedures, and practices
– Automation tools (OACS, eDAN,
EAST, WEST, etc.)
– Claim interpretation through lectures,
exercises, and mentoring
– Lab exercises
– Hands-on walkthrough of patent
examining process with discipline-
specific training application
• Just-in-time training throughout the first
year
IP Experienced Program• New examiners with experience in IP• Initial 25-day training in PTA
– Brief overview of U.S. statutes, rules, procedures, and practices
– Automation tools (OACS, eDAN, EAST, WEST, etc.)
– Claim interpretation through lectures, exercises, and mentoring
• Just-in-time training throughout the first year
12
PTA
13
MPEP 904 – How to Search
• Locate the most pertinent art ASAP• “It is rare that a text search alone will constitute
a thorough search of patent documents.” (MPEP 904.02)
• Prioritize areas most likely to produce relevant art
• Record search in OACS “Search Notes” form
14
Seven-Step Search Strategy
Identify Classes• Brainstorm keywords related to purpose, use, and composition• Look up the keywords in the Index to the U.S. Patent Classification and CPC
to find classes/subclasses• Verify the relevance of the classes/subclasses by using the Classification
Schedule in the Manual of Classification• Read the Classification Definitions to verify the scope of the subclasses and
note “see also” references
Access Full Text • Search the Patent and PGPub databases by Current U.S. or CPC
Classification
Review• Review claims, specification, and drawings of references for relevance• Check references’ “U.S. Cl.” and “Field of Search” areas for additional
class/subclasses
15
USPC
16
CPC
17
Tools
• EAST– Examiner's Automated Search Tool
• WEST– Web Examiner Search Tool
18
Patent-Related Databases
• US Patents Full-Text• US Pre-Grant Publication Full-Text• EPO Abstracts• JPO Abstracts• Derwent World Patents Index • IBM Technical Disclosure Bulletin• US Patents OCR Backfile
19
Search Capabilities
• Patent/PGPub numbers• Classification
– U.S. Patent Classification (USPC)– Cooperative Patent Classification (CPC)– International Patent Classification (IPC)
• Text searching– Boolean and proximity operators– Applying truncation to search terms
• Inventor or assignee• Forward and backward citations• Date ranges
20
Field Indices
21
EAST Interface
22
EAST Browser Window
23
EAST Classification Window
24
EAST Search History
25
PTO-892
26
Additional Features
• Tagging• Backward/forward citations• KWIC (KeyWords In Context)• Derwent patent family view
27
WEST Interface
28
Thank you
Collaboration Resources
Scott Beliveau
Supervisory Patent Examiner, TC2400
Introduction
31
Preissuance Submissions
America Invents Act (AIA)
allows the innovation
community to contribute to
the quality of examination by
submitting published
materials within a certain
timeframe with a concise
description of each
document’s relevance
32
More information can be found at:
http://www.uspto.gov/aia_implementation/patents.jsp#heading-7
http://www.uspto.gov/news/pr/2012/12-60.jsp
International Worksharing
• International agreements allow the USPTO to access work performed by other IP offices to reduce duplication of efforts
• Programs include:– Patent Prosecution Highway (PPH)– JP-First– First-Look Application Sharing (FLASH)– UKIPO Worksharing Initiative– USPTO-KIPO Bilateral pilot
33
International Worksharing
34
Examiners are• Made aware that
international work results are available
• Given direct access to results
• Provided with resources to understand the results
More information can be found at:
http://www.uspto.gov/ip/global/patents/ir_pat_worksharing.jsp
http://www.uspto.gov/ip/global/patents/Worksharing.pdf
Publicly-Supported Training
• Patent Examiner Technical Training Program (PETTP)
• Site Experience Education Program (SEE)
• Annual Technology Center Tech Fairs
35
More information can be found at:
http://www.uspto.gov/patents/pettp.jsp
Quality Enhancement Meetings
• Peer-centered meetings for examiners of all experience levels to meet, discuss patent applications, and share knowledge
• Examiners provide search and examination guidance to their peers
36
38
Examiner's Electronic Digest Database (E2D2)
• Contains over 13,000 records across all TCs• Database design intended to make it easy for examiners to use
– Art- and class-specific keywords– Examiner annotations– U.S. class/subclass information
• Resources available include– Book excerpts– Catalogs– Handbooks– Manuals– Journal articles– Technical reports– Translated foreign patents– Newspaper articles
39
Thank you
Scientific and Technical Information Center (STIC)
Pamela Reynolds
Technical Information Specialist, TC2100 & TC2400
STIC
42
• Electronic Information
Centers (EICs) are located
within each TC
• Each EIC houses an art-
specific print collection
• Main STIC houses a
collection of scientific and
technical literature
• Over 80 million foreign
patents
USPTO Collections
• 500+ databases• 59,000+
electronic journals• 175,000+ ebooks• Extensive
historical and current print collection of books, journals, industry standards, and foreign patents
43
IP-Authenticated Access for Examiners
• IEEE Xplore• ACM Digital Library• Inspec• Ei Compendex• Dissertation Abstracts• Research Disclosure• IP.com• Safari Books• Science Citation Index• MathSciNet• ProQuest • EBSCO• ScienceDirect
44
Commercial Databases
• ProQuest Dialog• STN• Questel• Lexis/Nexis• Westlaw
45
Prior Art Search Services
• Professional search staff located in each TC search commercial databases to complement examiners’ searching
• Training provided to examiners– PTA– 15-Minute Demos– Lunch & Learn
Sessions– One-on-one sessions
with Search Strategy Experts (SSEs)
46
Translation Services
• In-house translators– 25 languages
• Machine translations
• External translation services for additional languages
47
STIC Service Report
48
FY2013 TC2100 TC2400 Total
Number of Searches Completed 859 1,150 2,009
Patent Family Searches 114 186 300
Document Delivery Requests 312 139 331
Translations (machine, written, oral) 290 331 621
STIC Classes/Demos/Training – Examiner Attendees
4,189 4,125 8,314
One-on-one Examiner Assistance 5,197 5,976 11,173
STIC-Examiner Interactions
• In-person• Telephone• E-mail• Instant message• Chat room
49
STIC NPL Page
50
Thank you
Search Demonstration
Boris Pesin
Supervisory Patent Examiner, TC 2100
Example Claim
53
A method executed in a mobile device for providing a user interface for an Internet service, comprising:• displaying a web site on the mobile device;• storing web site visit history on the mobile
device;• detecting an input to the mobile device; and• based on the input, displaying a web site on the
mobile device according to the visit history.
Demo
Q&A
Thank You
Jim Dwyer Janet Gongola
Chirag Shah Mark Radtke
Brian Sircus Gail Hayes
Anne Hendrickson Boris Pesin
Scott Beliveau Alexander Kalinowski
Stephen Koziol Mohammad Ghayour
Karen Catlin Nathan Newhouse
Ginger DeMille Lucy Park
Vei-Chung Liang Pamela Reynolds
Break
Stakeholder Presentations
© 2013 Patterson Thuente Pedersen, P.A., May be distributed with attribution - www.ptslaw.com
DISCLAIMER: This presentation and any information contained herein are intended for educational and informational purposes only and should not be construed as legal advice.
USPTO Software Partnership Meeting
Brad D. PedersenDecember 5, 2013
Automated Snapshot CapturePilot Project Proposal for Improving
Captured NPL Prior Art for Software Applications
61
The First NPL ProblemUndated Web Postings Cannot be Relied Upon
MPEP 2128 Date of AvailabilityPrior art disclosures on the Internet or on an on-line database are considered to be publicly available as of the date the item was publicly posted. * > Absent evidence of the date that the disclosure was publicly posted, if < the publication > itself < does not include a publication date (or retrieval date), it cannot be relied upon as prior art under 35 U.S.C. 102(a) or (b)*>. However <, it may be relied upon to provide evidence regarding the state of the art. Examiners may ask the Scientific and Technical Information Center to find the earliest date of publication > or posting <.
62
The Second NPL ProblemThe Illusive and Ever-Changing World-Wide Web
• Internet Archive– Does not crawl websites that “opt out” with “robots.txt”
• Knowledge Bases– Wikipedia: freely changeable– Knowledge Graph and Freebase: social/historical focus
• Semantic Web– Great idea that remains mostly unrealized
• Deep Web– Harvesting below the surface web is a hard problem– 2-3 orders of magnitude more information than surface web– BrightPlanet.com
63
The Underlying NPL ProblemThe Exponential Increase of Information
• The Amount of Stored Information has Exploded– “Every two days now we create
as much information as we did from the dawn of civilization up until 2003”, according to Eric Schmidt in August 2010.
– That was something like five exabytes of data in 2010.
– By 2016, Internet traffic will be more than a zetabyte (1020)
– Exponential Increase is the Rule, Not the Exception
64
The Snapshot ProposalCreating Time-Anchored Searchable Silos of NPL
• Automated Ingesting of Patent Application– Pilot limited to Specific Art Groups for Software cases.– “Opt In” by completing Electronic Form– Search targets generated by claim key-wording, glossification, NLP
analysis of specification and optional image analysis of figures– Possible tuple creation for semantic search using OWL, rdf, XML
and future cognitive computing analysis (Watson)
• Search/Crawl as of Filing Date of Application– Search targets used to capture specific NPL sources as of filing date
• Wikipedia/Freebase/Knowledge Graph/Wolfram Alpha• IEEE/ACM/EFF blogs, RFCs• Inventor/Assignee web materials
– Limited set of results from ranked search/harvest of entire web
65
The Snapshot ProposalCreating Time-Anchored Searchable Silos of NPL
• “Opt In” Electronic Form Includes:– Suggested search classes/sub-classes for application– Expressly defined terms– Structure/steps for each means-plus-function claim element– Initial List of IDS references– Optional claim set with corresponding reference numerals
• Searchable Silo of Results stored in Private PAIR– Copyrighted material not accessible other than to applicant
• Incentives for Participating– Examiners given extra time in prosecution to analyze captured silos– Applicants could be given advancement in queue of pending cases– Applicants get bibliography of NPL that reduces add’l IDS filings
66
The Snapshot ProposalExpanded Claim Key-Wording
1. A hat for an animal, comprising: a shell; a harness arrangement attached directly to the hat, including a first strap and a second strap, wherein the first strap and the second strap each have two loose ends which are movably secured to the shell of the hat; and the first strap and the second strap cross each other at a point below the muzzle of the animal when the hat is secured.
2. The hat of claim 1 wherein at least one of the first strap and the second strap is of a resilient material.
2. A hat for an animal, comprising: a shell; a harness arrangement attached directly to the hat, including a first strap and a second strap, wherein the first strap and the second strap each have two loose ends which are movably secured to the shell of the hat; and the first strap and the second strap cross each other at a point below the muzzle of the animal when the hat is secured;wherein at least one of the first strap and the second strap is of a resilient material.
1. A hat for an animal, comprising: a shell; a harness arrangement attached directly to the hat, including a first strap and a second strap, wherein the first strap and the second strap each have two loose ends which are movably secured to the shell of the hat; and the first strap and the second strap cross each other at a point below the muzzle of the animal when the hat is secured.
• Use Expanded Claim Sets for Key Word Frequency– Utilize the inherent nature of
independent and dependent claims to improve key word frequency scores.
Vs.
+
Thank You!About Brad Pedersen
Brad Pedersen is a patent attorney with more than 25 years of experience in patent law, engineering, business and entrepreneurship. He is a partner and the chair of the Patent Practice group at Patterson Thuente Pedersen, P.A., an intellectual property law firm in Minneapolis, Minnesota.
Brad is also a successful inventor and entrepreneur, with more than a dozen issued US patents and a recently launched RC gaming drone company – QFO Labs, Inc.
Brad is one of the more knowledgeable IP attorneys in the U.S. when it comes to the patent reform and the AIA. Since it was first introduced in 2005, he has actively followed the developments and debate surrounding patent reform at the agency, legislative and judicial levels. He educates clients and colleagues by writing and presenting on the imminent changes and strategies for dealing with the reforms. Brad can be reached at [email protected] or (612) 349.5774
About Patterson Thuente IPPatterson Thuente Pedersen, P.A. helps creative and inventive clients worldwide protect, and profit from, their ideas. Practicing in the areas of patents, trademark, copyright, trade secrets, IP litigation, international IP protection, licensing and post-grant proceedings, the firm’s attorneys excel at finding strategic solutions to complex intellectual property matters. Visit us online at www.ptslaw.com.67
John Toebes
Senior Director, Cisco SystemsPatent effectiveness tools and Process
Telephone: [email protected]
© 2013 Cisco and/or its affiliates. All rights reserved. 69
Identifying Related Patents Through Tags and CategoriesJohn ToebesSenior Director, Intellectual Property
November 5, 2013
© 2013 Cisco and/or its affiliates. All rights reserved. 70
Background• Identifying good prior art requires great searching
• Tough to scale without experts
• Similar to recommendation systems such as collaborative filtering
• Companies such as Amazon figured out how to scale this problem
• Cisco has > 10,000 Issued US patents with an internal tool called CPOL which provides search capabilities
• Cisco applied tags and categories to successfully improve the ability to locate assets
© 2013 Cisco and/or its affiliates. All rights reserved. 71
Addressing the IssueCreated Category Taxonomy to cover all assets
Tested the taxonomy with different people
Not dissimilar from CPC, but with important restrictions
1. Only three level, ~200 categories
2. Each category must expect to represent no less than 1% and no more than 5% of all assets
3. Each patent asset can have no more than 3 categories.
Scarcity and bucket size ensure that assets will at least be in the bucket everyone looks in
© 2013 Cisco and/or its affiliates. All rights reserved. 72
User Tags• While categories ensure that you will have the asset in the
collection, tags allow for refinement.
• Tags are user defined but have types: Products, Standards and Generic
• Tags also include a description and identify the creator
• Anyone can create a tag and apply any tag to any patent asset
• Tag management tools allow for combining, marking equivalence and even retiring tags.
© 2013 Cisco and/or its affiliates. All rights reserved. 73
Tag Validation• There is no central authority for tagging
• With any set of patent assets, a tag cloud quickly tells you what it is about
• With only 10% of our assets tagged, we could readily distinguish our portfolios
• At 90% coverage it becomes easy to see outliers
• Clusters of related patents become easy to recognize
© 2013 Cisco and/or its affiliates. All rights reserved. 74
Refining Search• When looking for a particular asset, it is easy to start with a
category even though it brings a large set.
• Turning on the Tag Cloud gives instant visibility into what else could be looked for
• Searching for a combination of tags allows prioritizing the best match
Search Categories Tag Cloud Tag Combinations
© 2013 Cisco and/or its affiliates. All rights reserved. 75
Surprising Results• It is less important who tagged something or what they tagged it
with than the fact that the same person tagged multiple items.
• Given any set of found patents, you can find other similar ones by using the tags on the initial set. The weight of the frequency of the tags allows for prioritization of the matched set
• Inventors and even business organizations or assignees can be treated as virtual tags to improve the match
Thank you.
Michael Messinger
Director, Sterne, Kessler, Goldstein & Fox P.L.L.C.Telephone: 202-772-8667
© 2013 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved.
Incentivizing Applicant-Provided
Search Results
Michael V. Messinger
Partner, Electrical and Clean Tech Practice Group
December 5, 2013
© 2013 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved.80
Search or No Search?
• Recent Software Patent Trends Favor Search
• “File Without Search” Approach is Becoming Harder to Justify– Search Costs Down– Risks of Willful Infringement and Inequitable Conduct From Proper Search
Down– Increased Scrutiny by PTO and Courts of Software Patents Under
§§ 101, 112, 102 and 103
• Advantages to Knowing Best Prior Art
© 2013 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved.81
Significant Incentives For High-Quality Searching Are Already Present
• Software Patent Marketplace Benefits– Patent grant over quality prior art increases software-related patent valuation– IDS filings can increase patent valuation– Presence of respected non-patent literature can increase value
• Drafting Benefits– Understanding closest prior art permits tailored claim drafting, range of
scope, and more effective claim terminology– Allows better interviewing of inventors– Leads to more detail in specification – Better pre-filing filtering
• Examination Benefits– Faster end-to-end prosecution, less RCEs– Helps ensure adequate disclosure under § 112– Helps ensure adequate disclosure to overcome § 101– Helps avoid prior art surprises and eligibility rejections
© 2013 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved.82
Advantages of Searching in Software Arts
Drafting Examination Valuation
• Problem/Solution focus
• Identifies inventive concepts and meaningful limitations
• Provides opportunity for inventors to amplify description of inventive concepts
• Claims overcome prior art
• Accurate terminology• Adequate
writtendescription
• Shortens prosecution
• Increases opportunities for Success in overcoming 101, 112, 102 and 103 rejections
• Alerts Examiner of allowable subject matter
• IDS increases valuation
• Grant over representative prior art increases valuation
• Tailored claims scope increases valuation
• Better spending decisions
© 2013 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved.83
Possible New Incentives for High-Quality Searching by Applicants
• Add a yes/no check box on Application Data Sheet:– If no IDS accompanies this filing, indicate whether a search
has been performed.
• Increase Proper Application of Rule 105 (MPEP §§ 704.10-11)– Allows Examiners to request information from Applicant– Factors include:
• Whether IDS is present• Whether background description is adequate
– Limits to what can be requested: “Similar to 37 CFR 1.56, applicant is required by 37 CFR 1.105 to submit information already known, but there is no requirement to search for information that is unknown.” MPEP § 714.12
© 2013 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved.84
Possible New Incentives for High-Quality Searching
• Add an indication on face of patent indicating items of information provided by Applicant
• Add an indication on face of published patent applications indicating items of information provided by Applicant
• Add a yes/no check box in Office Action cover sheet of whether Examiner found information in Applicant’s IDS or Background helpful.– Publish results by assignee, inventor, and legal representative name.
• Provide rewards to Applicant for including a high-quality search for software-related art– Non-Patent Literature– Descriptions of relevance– Strong background section
• Potential rewards– Reduce or waive search fees – Advance examination
© 2013 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved.85
Possible New Incentives for High-Quality Searching
• New Technical Tools to facilitate IDS Submission
• Accept video information in IDSs
© 2013 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved.86
Contact Information
Mike Messinger
202.772.86671781697
Discussion
Next Steps
• Evaluate the information collected
• Generate recommendations for examiners and stakeholderso Training
o Tools
• Continue the dialogue througho Microsite
o Future partnership events
Prior Art Micro-Site